EquityRG LLC

Trademark Trial and Appeal Board

Jan 15, 2008

No. 78674380 (T.T.A.B. Jan. 15, 2008)

Mailed:
January 15, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re EquityRG LLC
________

Serial Nos. 78674378 and 78674380
_______

Anna W. Manville, Kimberley A. Isbell and Melissa Cross of
Arnold & Porter LLP for EquityRG LLC.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark The Residence Company (in standard character format)
for services recited in the applications, as amended, as
follows:
“financial services, namely management of
capital and debt investment funds for
investment in real estate; real estate
agencies; real estate listing; real estate
investment; real estate property management”
in International Class 36;1

1 Application Serial No. 78674378 was filed on July 20, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce in connection with these recited financial
and real estate services in International Class 36. No claim is
made to the exclusive right to use the word “Company” apart from
the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 78674378 and 78674380
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“construction services, namely, construction
planning, general construction of residential
and mixed-use real estate, general
construction supervision, and construction
project management services” in International
Class 37; and

“design services, namely, architectural
design and specification services, and
interior design services” in International
Class 42.2

These cases are now before the Board on appeal from the
final refusals of the Trademark Examining Attorney to
register this designation under Section 2(e)(1) of the
Trademark Act based upon the ground that the mark is merely
descriptive when considered in relation to applicant’s
recited services, i.e., that the term “The Residence
Company” immediately informs potential purchasers about a
characteristic or feature of applicant’s services.
Applicant and the Trademark Examining Attorney fully
briefed each appeal. The marks, the legal issues, the
procedural histories and overall records are closely related
in these two appeals. Accordingly, these cases were
consolidated in order to issue a single opinion for these
two applications to register, reversing the refusals to
register as to all three classes of services.

2 Application Serial No. 78674380 was filed on July 20, 2005
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce in connection with these recited construction
and design services in International Classes 37 and 42. No claim
is made to the exclusive right to use the word “Company” apart
from the mark as shown.
Serial Nos. 78674378 and 78674380
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Preliminary matters
The Examining Attorney objects to applicant’s reliance
on certain applications and registrations, on the grounds
that applicant did not submit printouts of the
registrations. Ex. Atty. Appeal Brief p. 7. However, we
agree with applicant that these registrations were properly
made of record during prosecution. See TBMP § 1208.02.
Alternatively, even if the applicant’s attempts to place
copies of Office records into these cases were insufficient,
the Trademark Examining Attorney’s failure to object to this
evidence prior to the Trademark Examining Attorney’s appeal
brief results in the waiver of the objection. See Broyhill
Furniture Indus., Inc., 60 USPQ2d 1511, 1153 n.3 (TTAB
2001).
Similarly, the Trademark Examining Attorney argues, in
her brief, that applicant did not properly place dictionary
definitions of the word “residence” into the record.3 It is
true that applicant simply argued in its response to the
initial Office Action that the term “residence” has many
meanings, and proceeded to list them in the text of its
response:

3 Applicant submitted definitions of “residence” from Webster’s
II New Riverside University Dictionary (1994); Merriam-Webster
Online, < www.m-w.com >; and The American Heritage® Dictionary of
the English Language (4th ed. 2000).
Serial Nos. 78674378 and 78674380
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The term “RESIDENCE” has many meanings. It
can mean the place where one lives, or a
commitment to work and live in a specific
place - such as a “musician in residence” on
a college campus, or it can refer to a period
during which a physician receives specialized
clinical training …

However, this objection too is considered to have been
waived since it was not interposed in response to
applicant’s reliance on such listings in its initial
response. Id. In any case, we are free to take judicial
notice of dictionary definitions, and do so herein.
Refusals under Section 2(e)(1) of the Act
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes or
uses of the goods or services with which it is used or is
intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) [GASBADGE merely
descriptive of a “gas monitoring badge”]. See also In re
MBNA America Bank N. A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) [MONTANA SERIES and PHILADELPHIA CARD merely
descriptive of “credit card services.” The Court found that
a “mark is merely descriptive if the ultimate consumers
Serial Nos. 78674378 and 78674380
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immediately associate it with a quality or characteristic of
the product or service.”]. Hence, the ultimate question
before us is whether the term The Residence Company conveys
information about a significant characteristic or feature of
applicant’s services with immediacy and particularity.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods or
services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987) [APPLE PIE merely descriptive of potpourri
mixture: “Whether a given mark is suggestive or merely
descriptive depends on whether the mark ‘immediately conveys
… knowledge of the ingredients, qualities, or
characteristics of the goods … with which it is used,’ or
whether ‘imagination, thought, or perception is required to
reach a conclusion on the nature of the goods.’” (citation
omitted)].
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence of record, we must keep in mind that
the test is not whether prospective purchasers can guess
what applicant’s goods or services are after seeing
applicant’s mark alone. In re Abcor, supra at 218
Serial Nos. 78674378 and 78674380
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[“Appellant’s abstract test is deficient – not only in
denying consideration of evidence of the advertising
materials directed to its goods, but in failing to require
consideration of its mark ‘when applied to the goods’ as
required by statute”]; In re Home Builders Association of
Greenville, 18 USPQ2d 1313
(TTAB 1990) [NEW HOME BUYER’S
GUIDE merely descriptive of
“real estate advertisement services”]; and In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985) [APRICOT is
merely descriptive of apricot-scented dolls]. Rather, the
proper test in determining whether a term is merely
descriptive is to consider the alleged mark in relation to
the goods or services for which registration is sought, the
context in which the mark is used, and the significance that
the mark is likely to have on the average purchaser
encountering the goods or services in the marketplace. See
In re Omaha National Corp.,
819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) [the term
“first tier” describes a class of banks]; In re Intelligent
Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996) [the term
VISUAL DESIGNER is merely descriptive of “computer programs
for controlling the acquisition of data from measurement
Serial Nos. 78674378 and 78674380
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devices”]; In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991) [MULTI-VIS is merely descriptive of “multiple viscosity
motor oil”]; In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986) [DESIGN GRAPHIX merely descriptive of computer
graphics programs]; and In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979) [COASTER-CARDS merely descriptive of a
coaster suitable for direct mailing].
The Trademark Examining Attorney herein argues that
applicant is a company that provides the services recited
above “as it relates to residences or the places in which
one lives or dwells.” Hence, the Trademark Examining
Attorney argues that when this mark is viewed in relation to
the recited services, it is apparent that applicant features
financial, design, construction and property management
services for residences.
By contrast, applicant argues that the Trademark
Examining Attorney has submitted no evidence that
applicant’s services are in any way related to “residences,”
as opposed to other type of real estate such as commercial
real estate, citing to In re Remade, 66 USPQ2d 1222, 1224
(TTAB 2002). In this decision, the Board noted that
“[t]here is little evidence in this record that is clearly
relevant to applicant’s identified goods and services, and
the Examining Attorney did not request additional
Serial Nos. 78674378 and 78674380
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information about the nature of the goods and services, the
intended purchasers or the intended channels of trade.”
[emphasis supplied]. Furthermore, applicant argues that
inasmuch as the word “residence” has many potential
meanings, a consumer, upon encountering applicant’s mark,
would be required to undertake a multistage reasoning
process in order to divine the nature of applicant’s
services.
We turn then to look at the evidence the Trademark
Examining Attorney has placed into the record.
Attached to the second Office Action was a printout
from a website that the Examining Attorney claims
demonstrates the descriptiveness of applicant’s mark:

Serial Nos. 78674378 and 78674380
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As pointed out by applicant, this is not a printout of
applicant’s website. To the contrary, applicant argues that
this evidence shows a third party’s potentially infringing
use of the applicant’s mark in its ad copy. The mortgage
lending services offered on this website are different from
the services covered by the current applications, and
apparently would be directed to a different set of
customers. Moreover, this third-party usage has the look
and feel of trade name usage, not merely descriptive usage.
Accordingly, we find that these printouts do not support the
position of the Trademark Examining Attorney.
Serial Nos. 78674378 and 78674380
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As to the dueling dictionary definitions placed into
the record, we do not find convincing applicant’s argument
that we should reverse the position of the Trademark
Examining Attorney merely because the term “residence” has
meanings such as “a commitment to work and live in a
specific place” or “a period during which a physician
receives specialized clinical training.” That the word has
these other meanings in some other contexts is irrelevant to
our determination herein.
Nonetheless, we do find that applicant has adopted a
word combination that is not readily recognizable as
describing a particular characteristic or feature of
applicant’s services with any degree of specificity. There
is nothing in the record to suggest there is any such thing
as a “residence company.” Thus, the mark “The Residence
Company” does not convey any immediate and unambiguous
meaning. As used in connection with applicant’s financial,
design, construction and property management services, we
agree with applicant that the Trademark Examining Attorney
has failed to demonstrate that the term “The Residence
Company” is merely descriptive.
We concur with applicant that this three-word phrase
creates some ambiguity. In consequence thereof, actual and
prospective customers who encounter the mark in connection
Serial Nos. 78674378 and 78674380
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with the applicant’s services in the marketplace would have
to engage in a multi-stage reasoning process, involving
pausing, reflecting and then speculating on the significance
of the combined designation, in order to understand that, as
applied to applicant’s services, the services offered under
such term relate “to residences or the places in which one
lives or dwells.” As a result, the mark THE RESIDENCE
COMPANY is simply suggestive of the financial, design,
construction and property management services to be offered,
rather than being merely descriptive of such services.
As to other trademark applications and registrations
reviewed by the Office, the Trademark Examining Attorney is
correct in noting that the Office is not bound by any prior
actions taken in other cases. However, we do find most
interesting the following registrations of third parties:

CONSULTANTS IN
RESIDENCE
for “real estate consultation services” in
International Class 36;4
Residence for
Residents
for “real estate brokerage services” in
International Class 36;5
RESIDENCE for “advertising services, namely preparing
advertisements for others in the field of
real estate, direct mail advertising for
others in the field of real estate,

4 Registration No. 1532331 issued on the Principal Register on
March 28, 1989.

5 Registration No. 3050433 issued on the Principal Register on
January 24, 2006.
Serial Nos. 78674378 and 78674380
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providing advertising space in a magazine
relating to real estate, receiving real
estate advertisements from others through a
web site, and advertising real estate of
others including those featured in
magazines relating to real estate on a
global computer network; and providing a
web site featuring real estate advertising
services” in International Class 35; and
“providing a website which features
information on real estate topics of
interest to real estate buyers and sellers”
in International Class 36;6
RESIDENCE
INTERNATIONAL
for “magazines related to real estate” in
International Class 16;
“advertising services, namely preparing
advertisements for others in the field of
real estate, direct mail advertising for
others in the field of real estate, and
providing advertising space in a magazine
relating to real estate, and receiving real
estate advertisements from others through a
website” in International Class 35; and
“providing a website which features
information on real estate topics of
interest to real estate buyers and sellers”
in International Class 36.7

Similarly, it is interesting to note that Notices of
Allowance were recently issued for three of applicant’s
copending applications for retail store services for
interior home furnishings – in addition to all the services
involved in these appeals – for the mark shown below:

6 Registration No. 3135077 issued on the Principal Register on
August 29, 2006.

7 Registration No. 3205106 issued on the Principal Register on
February 6, 2007. No claim is made to the word “International”
apart from the mark as shown.

Serial Nos. 78674378 and 78674380
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EquityRG The Residence Company
In each of these copending Intent-to-Use applications, the
wording “The Residence Company” apparently was not found to
be merely descriptive of the services identified therein.8
While not necessarily outcome determinative, because we
do retain some doubt as to the descriptiveness of the term
“residence” for the recited services based on these records,
we find the handling of these third-party registrations and
three of applicant’s copending applications to be consistent
with reversals of the refusals to register herein.
We acknowledge that the distinction between merely
descriptive and suggestive is often made on an intuitive
basis rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd.,
228 USPQ 57, 58 (TTAB 1985). Accordingly, to the extent
that there may be any doubt as to whether applicant’s mark
is merely descriptive or suggestive, such doubt is resolved,
in accordance with the Board’s policy, in favor of the
applicant by allowing publication of the mark for

8 The services in Application Serial No. 78674369 are identical
to the International Class 36 services herein, the services in
Application Serial No. 78674511 are identical to the recited
services in International Classes 37 and 42 herein, while the
retail store services in Application Serial No. 78674372 actually
highlight the marketing of interior home furnishings – services
where arguably the term “residence” would more readily be
perceived as merely descriptive.
Serial Nos. 78674378 and 78674380
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opposition. Then upon publication of applicant’s mark, any
one who believes that it would be damaged by the
registration of the mark will have the opportunity to file
an opposition thereto. Such an entity may well be in a
stronger position to make the case for competitive need for
use of this term than is the Office in this ex parte
context. See In re Merrill Lynch, Pierce, Fenner, and Smith
Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987); In re
Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981); and
In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusals to register under Section
2(e)(1) of the Lanham Act are hereby reversed.